Infineon Technologies AG v. Intdomain / Apexed
Claim Number: FA1904001837572
Complainant is Infineon Technologies AG (“Complainant”), represented by Gary J. Nelson of Lewis Roca Rothgerber Christie LLP, California, USA. Respondent is Intdomain / Apexed (“Respondent”), Austria.
REGISTRAR AND DISPUTED DOMAIN NAME
The domain name at issue is <infineon.biz>, registered with PDR Ltd. d/b/a PublicDomainRegistry.com.
The undersigned certifies that he has acted independently and impartially and to the best of his knowledge has no known conflict in serving as Panelist in this proceeding.
Steven M. Levy, Esq. as Panelist.
Complainant submitted a Complaint to the Forum electronically on April 5, 2019; the Forum received payment on April 5, 2019.
On April 6, 2019, PDR Ltd. d/b/a PublicDomainRegistry.com confirmed by e-mail to the Forum that the <infineon.biz> domain name is registered with PDR Ltd. d/b/a PublicDomainRegistry.com and that Respondent is the current registrant of the name. PDR Ltd. d/b/a PublicDomainRegistry.com has verified that Respondent is bound by the PDR Ltd. d/b/a PublicDomainRegistry.com registration agreement and has thereby agreed to resolve domain disputes brought by third parties in accordance with ICANN’s Uniform Domain Name Dispute Resolution Policy (the “Policy”).
On April 9, 2019, the Forum served the Complaint and all Annexes, including a Written Notice of the Complaint, setting a deadline of April 29, 2019 by which Respondent could file a Response to the Complaint, via e-mail to all entities and persons listed on Respondent’s registration as technical, administrative, and billing contacts, and to postmaster@infineon.biz. Also on April 9, 2019, the Written Notice of the Complaint, notifying Respondent of the e-mail addresses served and the deadline for a Response, was transmitted to Respondent via post and fax, to all entities and persons listed on Respondent’s registration as technical, administrative and billing contacts.
Having received no response from Respondent, the Forum transmitted to the parties a Notification of Respondent Default.
On April 30, 2019, pursuant to Complainant's request to have the dispute decided by a single-member Panel, the Forum appointed Steven M. Levy, Esq. as Panelist.
Having reviewed the communications records, the Administrative Panel (the "Panel") finds that the Forum has discharged its responsibility under Paragraph 2(a) of the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules") "to employ reasonably available means calculated to achieve actual notice to Respondent" through submission of Electronic and Written Notices, as defined in Rule 1 and Rule 2. Therefore, the Panel may issue its decision based on the documents submitted and in accordance with the ICANN Policy, ICANN Rules, the Forum's Supplemental Rules and any rules and principles of law that the Panel deems applicable, without the benefit of any response from Respondent.
Complainant requests that the domain name be transferred from Respondent to Complainant.
A. Complainant
Complainant is engaged in the business of manufacturing of semiconductors and systems for automotive, industrial, multimarket sectors and offering services related to these same and related products. Complainant has rights in the INFINEON mark through its trademark registrations with the United States Patent and Trademark Office (“USPTO”), the earliest of which was filed in 1999. Respondent’s <infineon.biz> domain name, created on September 8, 2016, is confusingly similar to Complainant’s INFINEON mark as Respondent wholly incorporates the mark, while adding a “.biz” generic top-level domain (“gTLD”).
Respondent has no rights or legitimate interests in the <infineon.biz> domain name. Respondent is not authorized to use Complainant’s INFINEON mark and is not commonly known by the disputed domain name. Additionally, Respondent fails to use the disputed domain name in connection with a bona fide offering of goods or services or a legitimate noncommercial or fair use. Rather, Respondent’s disputed domain name resolves to a website featuring competing pay-per-click links.
Respondent registered and uses the <infineon.biz> domain name in bad faith. Respondent attempts to attract, for commercial gain, users to the disputed domain name by featuring competing pay-per-click links. Finally, Respondent had constructive notice of Complainant’s rights in the INFINEON mark prior to registering the disputed domain name.
B. Respondent
Respondent failed to submit a Response in this proceeding.
(1) the domain name registered by Respondent is confusingly similar to a trademark in which Complainant has rights;
(2) Respondent has no rights to or legitimate interests in respect of the domain name; and
(3) the disputed domain name was registered and is being used by Respondent in bad faith.
Paragraph 15(a) of the Rules instructs this Panel to "decide a complaint on the basis of the statements and documents submitted in accordance with the Policy, these Rules and any rules and principles of law that it deems applicable."
Paragraph 4(a) of the Policy requires that Complainant must prove each of the following three elements to obtain an order that a domain name should be cancelled or transferred:
(1) the domain name registered by Respondent is identical or confusingly similar to a trademark or service mark in which Complainant has rights; and
(2) Respondent has no rights or legitimate interests in respect of the domain name; and
(3) the domain name has been registered and is being used in bad faith.
In view of Respondent's failure to submit a response, the Panel shall decide this administrative proceeding on the basis of Complainant's undisputed representations pursuant to paragraphs 5(f), 14(a) and 15(a) of the Rules and draw such inferences it considers appropriate pursuant to paragraph 14(b) of the Rules. The Panel is entitled to accept all reasonable allegations set forth in a complaint; however, the Panel may deny relief where a complaint contains mere conclusory or unsubstantiated arguments. See WIPO Jurisprudential Overview 3.0 at ¶ 4.3; see also eGalaxy Multimedia Inc. v. ON HOLD By Owner Ready To Expire, FA 157287 (Forum June 26, 2003) (“Because Complainant did not produce clear evidence to support its subjective allegations [. . .] the Panel finds it appropriate to dismiss the Complaint”).
Complainant claims rights in the trademark INFINEON based upon registration of the mark with the USPTO. Registration of a mark with a national governmental trademark authority, such as the USPTO, is sufficient to establish rights in that mark. See Brooks Sports, Inc. v. Joyce Cheadle, FA 1819065 (Forum Dec. 28, 2018) (finding that Complainant’s registration of the BROOKS mark with the USPTO sufficiently conferred its rights in the mark under Policy ¶ 4(a)(i).”) The Panel therefore holds that Complainant’s registration of the INFINEON mark is sufficient to establish rights therein under Policy ¶ 4(a)(i).
Complainant next argues that Respondent’s <infineon.biz> domain name is identical and/or confusingly similar to the INFINEON mark as Respondent incorporates the mark in its entirety along with the “.biz” gTLD. Such changes are not sufficient to distinguish a domain name from an incorporated mark in a Policy ¶ 4(a)(i) analysis. See Riverbed Technology, Inc. v. Intdomain / Apexed, FA 1583571 (Forum Nov. 10, 2014) (finding that Respondent’s <riverbed.biz> domain name is identical to Complainant’s RIVERBED mark pursuant to Policy ¶ 4(a)(i).) Thus, the Panel finds Respondent’s disputed domain name is confusingly similar to Complainant’s DELL mark per Policy ¶ 4(a)(i).”). The Panel therefore determines that the <infineon.biz> domain name is confusingly similar to the INFINEON mark per Policy ¶ 4(a)(i).
Complainant must first make a prima facie case that Respondent lacks rights and legitimate interests in the disputed domain name under Policy ¶ 4(a)(ii). Should it succeed in this effort, the burden then shifts to Respondent to show that it does have rights or legitimate interests. See Advanced International Marketing Corporation v. AA-1 Corp, FA 780200 (Forum Nov. 2, 2011) (finding that a complainant must offer some evidence to make its prima facie case and satisfy Policy ¶ 4(a)(ii)); see also Neal & Massey Holdings Limited v. Gregory Ricks, FA 1549327 (Forum Apr. 12, 2014) (“Under Policy ¶ 4(a)(ii), Complainant must first make out a prima facie case showing that Respondent lacks rights and legitimate interests in respect of an at-issue domain name and then the burden, in effect, shifts to Respondent to come forward with evidence of its rights or legitimate interests”).
Complainant first argues that Respondent has no rights or legitimate interests in the <infineon.biz> domain name as Respondent is not commonly known by the disputed domain name nor has Complainant authorized Respondent to use the INFINEON mark in any way. Where a response is lacking, as is the case here, WHOIS information can support a finding that the respondent is not commonly known by a disputed domain name. See Philip Morris USA Inc. v. Usama Ramzan, FA 1737750 (Forum July 26, 2017) (“We begin by noting that Complainant contends, and Respondent does not deny, that Respondent has not been commonly known by the <marlborocoupon.us> domain name, and that Complainant has not authorized Respondent to use the MARLBORO mark in any way. Moreover, the pertinent WHOIS information identifies the registrant of the domain name only as ‘Usama Ramzan,’ which does not resemble the domain name. On this record, we conclude that Respondent has not been commonly known by the challenged domain name so as to have acquired rights to or legitimate interests in it within the purview of Policy ¶ 4(c)(ii).”). The WHOIS information of record here identifies the registrant of the at-issue domain name as “Intdomain / Apexed,” and no information in the record indicates that Respondent is known otherwise or was authorized to register a domain name incorporating Complainant’s mark. The Panel therefore finds under Policy ¶ 4(c)(ii) that Respondent has not been commonly known by the <infineon.biz> domain name.
Complainant further argues that Respondent’s lack of rights or legitimate interests in the <infineon.biz> domain name is demonstrated by its failure to use the name to make a bona fide offering of goods or services or for a legitimate noncommercial or fair use. Complainant contends instead that the name resolves to a website which is being used to obtain pay-per-click revenue by linking to third-party websites, some of which compete with Complainant’s business. Use of a domain name to link to a complainant’s competitors is not a use indicative of rights or legitimate interests per Policy ¶¶ 4(c)(i) or (iii). See Danbyg Ejendomme A/S v. lb Hansen / guerciotti, FA1504001613867 (Forum June 2, 2015) (finding that the respondent had failed to provide a bona fide offering of goods or services, or a legitimate noncommercial or fair use of the disputed domain name where the disputed domain name resolved to a website that offered both competing hyperlinks and hyperlinks unrelated to the complainant’s business). Complainant contends the domain name resolves to a website displaying only pay-per-click links, some of which send users to competitor’s websites. Complainant submits into evidence screenshots of Respondent’s website to support this contention. In the absence of a Response or any other submission by the Respondent, the Panel agrees that Respondent does not have rights or legitimate interests in the <infineon.biz> domain name based upon the use to which the domain has been put.
Complainant contends that, in light of the registration of Complainant's INFINEON mark, Respondent registered the <infineon.biz> domain name with constructive knowledge of Complainant's rights in the mark. The Panel here finds that any arguments of bad faith based on constructive notice are not applicable, however, because UDRP case precedent declines to find bad faith as a result of constructive knowledge except in very narrow circumstances where both parties are subject to the laws of a jurisdiction in which the concept of constructive notice is accepted. See The Way Int'l, Inc. v. Diamond Peters, D2003-0264 (WIPO May 29, 2003) ("As to constructive knowledge, the Panel takes the view that there is no place for such a concept under the Policy."). However, it is further argued that, given the fame and notoriety of Complainant’s mark, it is inconceivable that the Respondent did not have actual knowledge thereof. Of course, it is well settled that actual knowledge of a mark may be adequate evidence of bad faith registration under Policy ¶ 4(a)(iii). See Orbitz Worldwide, LLC v. Domain Librarian, FA 1535826 (Forum Feb. 6, 2014) (“The Panel notes that although the UDRP does not recognize ‘constructive notice’ as sufficient grounds for finding Policy ¶ 4(a)(iii) bad faith, the Panel here finds actual knowledge through the name used for the domain and the use made of it.”). Here, the Complainant submits evidence of the reputation of its mark and, combined with the distinctiveness of the word INFINEON and the identity wherewith of the disputed domain, the Panel finds that Respondent must have had actual knowledge of Complainant’s rights in the INFINEON mark prior to registering the domain name and thus did so in bad faith.
Complainant further asserts that Respondent’s bad faith is indicated by its use of the <infineon.biz> domain name to link to third party websites, some of which compete with Complainant’s business. Use of a domain name to resolve to a page of third-party links, including those to competitive sites, can demonstrate a respondent’s bad faith per Policy ¶ 4(b)(iv). See Staples, Inc. and Staples the Office Superstores, LLC v. HANNA EL HIN / DTAPLES.COM, FA1404001557007 (Forum June 6, 2014) (“Therefore, the Panel finds that Respondent registered and is using the <dtaples.com> domain name in bad faith under Policy ¶ 4(b)(iv) because the Respondent is using the disputed domain name to host third-party links to Complainant’s competitors from which Respondent is presumed to obtain some commercial benefit.”). Complainant contends the domain name resolves to a webpage displaying pay-per-click links to third party websites, some of which belong to competitors of Complainant. The Panel therefore finds that Respondent has registered and used the domain name in bad faith per Policy ¶ 4(b)(iv).
Having established all three elements required under the ICANN Policy, the Panel concludes that relief shall be GRANTED.
Accordingly, it is Ordered that the <infineon.biz> domain name be TRANSFERRED from Respondent to Complainant.
Steven M. Levy, Esq., Panelist
Dated: May 2, 2019
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